September 7th, 2016

“One invention, one patent” and Restriction Requirements

By Harry Du

Is there a patent equivalent of “one person, one vote?” Undoubtedly, there is. A doctrinal pillar of the patent system takes the form of “one invention, one patent.” That sounds awfully straightforward and self-explanatory, right? Not so fast.

What is ONE invention? If you invented a special syringe using a special curved needle? Is that one invention? Two? Or even three? Does the method to use the syringe and needle also considered an invention? Sometimes it is very hard to draw the lines. The US Patent Office has a set of rules to deal with the question. However, there is always much discretion involved.

In many cases of patent application, the first office action does not deal with the patentability of the invention. Instead, the first office action is a Restriction Requirement, which tells the inventor that there are more than one inventions included in the application and demands the inventor to elect which invention will be further prosecuted. The Restriction Requirements have become more and more prevalent in recent years, in a large part because the Patent Office implemented a bonus system based on the number of inventions an examiner completes. Therefore, the examiners are taking a very strict approach to decide the number of inventions included in an application.

To reply to a Restriction Requirement, the inventor may choose to traverse the examiner’s assertion—arguing that there is indeed only one invention included. However, even with the traverse, the inventor still has to elect one species to continue the prosecution process. In a large part, it is not worth it for the inventor to make a long argument against a Restriction Requirement. In many cases, making the election without traversing is the most rational choice.

One useful approach in replying to the Restriction Requirement is to revise the claims subjected to the Restriction Requirement so that they are directed to a single genus, making the division requested by the Restriction unnecessary. In the mean time, it is always prudent to discuss the matter with the examiner, finding a generally acceptable solution.


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